News & Updates


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April 2011 Trademark Group Lunch

May 11, 2011

Topics covered in this month’s trademark group presentation include Trademark Document Retrieval 2.0, case law updates concerning topics including right of publicity, natural scope of expansion, bona fide intent, related goods, and Google Adwords in Europe. Click here to download a copy of the presentation.

Building the Strength of Your Trademark

May 4, 2011

So, you can rest easy now that you have a federal trademark registration, right?  No! 

Federal trademark registrations provide many protections and advantages to trademark owners.  Nevertheless, even with federal trademark registrations in hand, trademark owners will benefit from active efforts to build and maintain the strength of their trademarks.

A trademark owner can lose trademark rights by not using the trademark, by not using the trademark correctly, by failing to enforce the trademark against third-party infringers and/or by failing to object to generic misuse of the trademark.  Ironically, in some instances trademarks can be become so famous (think, GOOGLE®, VELCRO® and STYROFOAM®) that trademark owners must switch gears from heavily promoting their trademarks to limiting how people use their trademarks.  Like failing to enforce a trademark against known infringers, improper use of a trademark by the public may diminish the trademark’s value. 

It is important to keep in mind that one major rule in using a trademark properly is to use the trademark as an adjective, not a noun or a verb.  In other words, the trademark is the brand name (an adjective) describing the associated goods or services. 

Trademarks can become generic if the public starts using the trademark to refer to what something is, rather than as a brand name.  Therefore, some trademark owners develop branding campaigns to educate consumers on how to properly use their marks.  For example, the companies behind the XEROX® and KLEENEX® trademarks have devoted considerable resources in such campaigns to keep these trademarks from becoming the generic nouns for photocopies and tissues.  A trademark owner is wise to monitor the trademark’s usage on the internet, in the media and in dictionaries, and should object to improper treatment, such as generic misuse, if necessary.        

With respect to enforcement of trademark rights against third-party infringers, trademark owners must act with reasonable diligence in enforcing their trademarks rights.  However, courts do recognize the expense and potential business considerations involved in bringing a trademark infringement lawsuit, and as such, a trademark need not be enforced against every nameless John Doe who misuses the mark through a random comment on Facebook.  On the other hand, if the trademark is not enforced against the owner’s arch nemesis who is stealing sales, there is a risk that the mark will be found to have lost strength, or worse, that the trademark has become abandoned and therefore completely unenforceable. 

Please contact is if you would like to learn more about recommended protection efforts for your trademark.

Maintaining Trademark Rights: Policing and Educational Efforts

April 8, 2011

Below is a presentation discussing the various ways courts have evaluated a trademark owner’s efforts (or lack thereof) to police its mark, as well as efforts that should be taken to prevent a trademark from becoming generic. Click here to download a copy.

March 2011 Trademark Group Lunch

March 30, 2011

Topics covered in this month’s trademark group presentation include the forthcoming update to the Trademark Trial and Appeal Board Manual of Procedure (TBMP), case law updates concerning topics including fraud in the context of a statement of use, tacking, relation of goods and services, and the Visual Artists Rights Act. Click here to download a copy of the presentation.


January 2011 Trademark Prosecution Lunch

January 28, 2011

Topics covered in this month’s trademark prosecution presentation include discussions of recent changes to the TEAS system, Patent and Trademark Office alerts, trademark foreign equivalents, scandalous marks, and state sovereign immunity. Click here to download a copy of this presentation. 

October 2010 Prosecution Lunch – Trademark

November 3, 2010

Topics covered in this month’s trademark prosecution presentation include discussions of a recent Federal Circuit case about contributory liability, a Ninth Circuit case about the first sale doctrine and copyright linceses, a Seventh Circuit case regarding standing and what is a commercial interest under the Lanham Act, and a Federal Circuit case addressing inherent disctinctiveness of trade dress.  Click here to download a copy of this presentation.

September 2010 Prosecution Lunch – Trademark

September 29, 2010

Topics covered in this month’s trademark prosecution presentation include a discussion of the latest Trademark Public Advisory Meeting, potential changes to the Trademark Electronic Search System (TESS), a Trademark Trial and Appeal Board (TTAB) update, case discussions concerning disclaimers as well as packaging that failed to function as a trademark, and a discussion of TTAB case that concerns discovery issues. Click here to download a copy of the presentation.

Presentation- Take Down Provisions: Copyright First. Now Trademark. What Next?

September 16, 2010

Below is a presentation that discusses how the take down provisions of the Digital Millennium Copyright Act (DMCA) have been expanded to not only cover copyrights but other forms of intellectual property, such as trademarks, rights of publicity, patents, etc. The presentation compares the different take down procedures used by major websites as well as provides sample take down forms and policies. Click here to download the PowerPoint presentation.

August 2010 Prosecution Lunch – Trademark

August 20, 2010

For the latest in trademark news, please view the PowerPoint below from our August 2010 Patent & Trademark Prosecution Group meeting.  Topics covered in this month’s presentation include the creation of the new U.S. Intellectual Property Enforcement Agency and a recent 9th Circuit ruling on trademark dilution.  Click here to download the PowerPoint presentation.

Trademark Office Consistency Program Extended

August 20, 2010

After assessing the Trademark Consistency Initiative Pilot Program, the United States Patent and Trademark Office (USPTO) has decided to extend and expand the program.  The USPTO is expanding the parameters of the program so that a Request for Consistency Review on substantive or procedural issues (excluding issues involving identifications of goods and services) may include registrations that have issued within the past five years.  Additionally, for at least a period of four months, commencing on June 23, 2010, the Office will accept Requests concerning inconsistency issues with respect to identifications of goods and services.  Please note that applications and registrations based on the Madrid Protocol are excluded and registrations relied upon must have issued within the two years prior to the Request.  Additionally, the pending application at issue must have a final identification or classification requirement outstanding.  

 If you would like more information on the Trademark Office’s Consistency Program, please contact us.

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